RESOLVING INTELLECTUAL PROPERTY DISPUTES THROUGH MEDIATION

WHY SELECT ONE OF OUR NEUTRALS

Neutrals with Subject-Matter Expertise and Mediation/Arbitration Experience

Why should you engage a neutral with subject matter expertise and mediation or arbitration experience to mediate or arbitrate an intellectual property dispute?

  1. To better understand the issues. 

    In both mediation and arbitration, background knowledge and an ability to easily and accurately grasp the factual and legal issues in dispute will enable the neutral to quickly and effectively get to the heart of the matter. Parties and their counsel do not want to waste time educating the neutral on the basics of intellectual property law, industry licensing and other contracting practices, the relevant technology or the meaning of technical terms.

  2. To assist in creative interest-based resolution.

    The mediator can use her or his knowledge and experience of industry practices, similar situations, and current trends to assist the parties in crafting a “win-win” solution that may not be apparent to someone who lacks IP expertise. For example, a mediator with licensing experience may suggest ways to use a license to better define each party’s exclusive rights to a property (whether patent, trademark or copyright) and avoid future conflicts and competition, while ensuring fair compensation for the rights holders.

  3. To render a fair decision.

    The arbitrator must be able to correctly interpret legal rights, such as the scope of patent claims, and agreements, such as the rights and obligations in a license agreement. While the interpretation must be based on the evidence and legal arguments presented by the parties, not the arbitrator’s own personal experience, IP expertise will help ensure that the arbitrator does not misunderstand the background to the issues, the evidence or the law.

What kind of expertise should you look for in an IP neutral  for mediating or arbitrating an IP dispute?

Technical expertise – If the key issues in the dispute are technical ones, the parties may look for someone with training and experience in engineering, chemistry, life sciences, or computer science.  Even basic knowledge and experience in these areas will enable the neutral to understand the technical terminology and understand, or quickly grasp, on the technology

Industry expertise – Often it is useful to have a neutral with some business experience in an industry.  This may be a technical field such information technology, oil and gas, mining, or health care; or it may be involve arts and entertainment, such as publishing, music, film and television, theatre. Even professional and amateur sports have their own specialized areas of expertise. Trademark experience may be necessary in resolving franchising, branding or other branding disputes.

Legal expertise – A thorough grounding in patent, trademark and copyright law will assist the neutral in understanding the positions and arguments of each of the parties. In mediation, the mediator may challenge each party’s interpretation of the law or point to contrary views which may encourage settlement rather than the uncertain outcome of litigation. In arbitration, the arbitrator must fully understand the law, in all of its complexities, in order to render a fair and enforceable decision. Neutrals with an IP law background will appreciate subtleties and nuances that other neutrals might overlook.

Mediation and arbitration expertise – Finally, the neutral should have experience in mediation and/or arbitration, either as counsel or as a neutral. Both processes are fundamentally different from litigation. A retired judge or senior lawyer may have lots of IP expertise, but if he or she does not have training and experience in mediation or arbitration, the parties may not get all the benefits they should from the process.

RECENT UPDATE

IP Neutrals of Canada congratulates Justice Michael Manson on his recent appointment to the Federal Court of Canada, Trial Division. Justice Manson is a founding member of IP Neutrals of Canada, and his insights and dedication to the advancement of ADR have been invaluable.

IP Neutrals also is pleased to announce that Steven Z. Raber of Fillmore Riley LLP, Winnipeg, has been appointed as a member of IP Neutrals of Canada.

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Located in several major centres across Canada, our IP Neutrals are highly respected, seasoned lawyers and patent and trade-mark agents who have received the highest accolades from both their clients and their peers.

Find an expert whose experience best suits your needs.